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21 November 2016Trademarks

Luxottica and Oakley eye up counterfeiters in TM suit

Italian eyewear company Luxottica, and its subsidiary Oakley, have filed a trademark infringement lawsuit against a number of online counterfeiters.

Luxottica and Oakley filed the lawsuit (pdf) at the US District Court for the Northern District of Illinois, Eastern Division, on November 18.

The suit claimed that a group of unknown counterfeiters, who reside in China, sold counterfeit versions of Ray-Ban and Oakley eyewear online.

Luxottica owns brands including Ray-Ban, Oakley, Vogue Eyewear, Persol, Oliver Peoples, Alain Mikli and Arnett.

The eyewear company argued that the defendants infringed the trademarks to recreate counterfeit imitations of their products and falsely designated their origin.

The defendants also engaged in acts which violated the Illinois Uniform Deceptive Trade Practices Act, claimed Luxottica.

According to the suit, Luxottica owns trademarks at the US Patent and Trademark Office (USPTO) for the term ‘Ray-Ban’, which it has used since 1937.

Oakley owns marks for the term ‘Oakley’, ‘Crosslink’ and ‘Jawbreaker’.

The suit said that an “interrelated group of counterfeiters” worked together to “knowingly and wilfully manufacture, import, distribute, offer for sale, and sell products” that bore counterfeit versions of the eyewear brands’ marks.

These counterfeiters sold the fake sunglasses on a number of e-commerce platforms.

Internet sites such as the ones run by the defendants “are estimated to receive tens of millions of visits per year and to generate over $135 billion in annual online sales”, the suit said, according to intellectual property statistics issued by US Homeland Security.

The suit added that these online stores include “content and design elements” that make it “very difficult” for consumers to distinguish counterfeit sites from an authorised website.

Defendants also go to “great lengths to conceal their identities” and often use multiple fictitious names and addresses to register and operate their “massive network” of internet stores, said the claim.

Luxottica and Oakley are asking for statutory damages for wilful trademark infringement of $2 million for each use of the marks and $100,000 per domain name incorporating any of their marks.

The companies are also seeking injunctive relief, transfer of the infringing domain names, an account of profits, costs and attorney’s fees.

The defendants were named in an appendix, but the document is sealed.

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